SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Chulgun Lim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits The primary civil remedies for trade mark or copyright infringement are injunctions against infringement and claims for damages. For an injunction request, the statute of limitations does not apply if the infringe - ment continues. For a damages claim, the limitations period expires three years after the date the IP right holder becomes aware of the injury and the infringer, or ten years from the date of the infringement. Korea does not generally recognise defences such as laches, other than express statutory limitation peri - ods for the exercise of rights. However, there have been instances where a similar argument has been accepted as an “abuse of rights” defence in trade mark infringement cases. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Mark Infringement The following actions are stipulated as registered trade mark infringement: • using a trade mark that is identical/similar to another’s registered trade mark on goods that are identical/similar to the designated goods; • delivering, selling, forging, imitating or possessing a trade mark that is identical/similar to another’s registered trade mark to use or cause a third party to use the trade mark on goods that are identical/ similar to the designated goods; • manufacturing, delivering, selling or possessing equipment to forge or imitate another’s registered trade mark or causing a third party to forge or imi - tate such trade mark; and • possessing goods that are identical/similar to the designated goods bearing another’s registered trade mark or any other same or similar trade mark to transfer or deliver such goods. Available remedies for registered trade mark infringe - ment include: • an injunction against the infringement;
ers. Types of licences include an exclusive licence, a non-exclusive licence and a sole licence. Trade mark licensing can be granted without any for - mal requirements, and even unregistered licences and licences granted in respect of a pending application have effects between the parties. However, the licen - see cannot assert its right against third parties without registration. Trade marks can effectively be protected indefinitely through renewal of their duration, and can also be licensed perpetually. Copyright No special form or procedure is required for copyright licensing. Collaborative works need consent from all authors for licensing. Parties are free to determine licence details, including the type – eg, an exclusive, non-exclusive or sole licence. There is no prohibition on granting licences without a specified term, and licences can encompass archival rights with agree - ment between the parties. 6.3 Registration or Recording of an Assignment or Licence Except in cases of inheritance or general succession, the transfer of trade mark rights becomes effective only upon registration. Granting a licence is effective between the parties even without registration but, if registered, the right to use can be asserted against anyone. Therefore, if a third party registers the trade mark rights or a licence with registration based on a subsequently dated agreement, the transferee or licensee without registration cannot become a valid trade mark owner or licensee. The transfer of economic rights in copyrighted work, exclusive publication rights and publication rights can be registered. Although registration is not mandatory, failure to register means that the rights cannot be asserted against third parties, such as other trans - ferees. The licence to exercise economic rights is not subject to registration.
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